English High Court decides that “making available” over the internet occurs only in jurisdiction where servers are based

In a Judgment handed down on 17 November 2010, Mr Justice Floyd in Football Dataco Limited, The Scottish Premier League Limited, The Scottish Football League Limited and PA Sport UK Limited v Sportradar GmbH and Sportradar AG held that the act of making available to the public by online transmission is committed and committed only where the transmission takes place.

The Claimants (together "FDC") exploited certain data relating to English and Scottish football matches. This data was compiled in a database known as "Football Live". The data included goals scored, goalscorers, penalties, yellow and red cards and substitutions. The data is both updated and provided to third parties while matches are taking place.

The Defendants (together "Sportradar") were a German company and its Swiss parent who assembled data relating to live English and Scottish football matches from public sources. This data is called "Sports Live Data". The data was stored on webservers in Germany and Austria but could be accessed via links from elsewhere, including from the United Kingdom.

FDC issued proceedings in the High Court on 23 April 2010. They alleged infringement of UK copyright and database right in Football Live by Sportradar.

Sportradar challenged the jurisdiction of the English Court on the basis that they were committing no acts of infringement in the UK and were domiciled in Germany and Switzerland. The First Defendant subsequently issued proceedings against FDC in Germany on 14 July 2010 seeking negative declarations that its activities did not infringe any Intellectual Property rights of FDC.

FDC subsequently applied to amend their Particulars of Claim in the English proceedings to clarify existing alleged acts of infringement and add new ones.

Decision

The Judge commented that it was important to examine with some care what, if any, claims were made in the original Particulars of Claim. This was because Sportradar argued that the German Court was first seized of any claim which the English Court was not properly seized of before 14th July 2010. The exercise had to be carried out without the benefit of the amendments for which permission had not yet been granted.

Jurisdiction with regard to the German company was governed by the Judgments Regulation and in the case of the Swiss company by the Lugano convention. The Judge had to decide whether FDC could show a "good arguable case" of UK copyright and/or database right infringement in order to establish jurisdiction in the UK.

On the basis of the evidence he held that Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK.

As regards the act of re-utilization in respect of database right he referred to the definition in Article 7(2)(b) of the Database Directive:

Any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies by renting, by on-line or other forms of transmission

The Judge took the view that this raised a question of law as to where the act of "making available" occurred. The issue was closely related if not identical to an issue raised on the amendment application of where "making available" occurred for the purpose of s.20 Copyright Designs and Patents Act 1988.

The Judge followed Cheleram v Cheleram (No.2) [2002] 2 All ER 17 that where a question of whether the Court has jurisdiction turned on a pure question of law, the Court needed to decide the question.

He referred by analogy to the debate as to where a "broadcast" occurred, was it at the place of transmission or also at the place of receipt? This had been resolved by the Directive on Satellite Broadcasting and Cable Re-transmission for broadcasts orginating within the EU. Under the directive the act of broadcast occurs where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication ("emission theory").

Sportradar argued that emission theory should apply to the making available right and re-utilization as the restricted act is making available and the public do not have to actually access the database to infringe.

FDC raised a number of arguments including that emission theory would make the right to prevent online transmission worthless, as the server could be positioned in a state where there was no redress. The Judge did not accept this. The right would prevent transmission or re-transmission in a state to which the Directive applies and other restricted acts would prevent further use of the database within the state of reception.

The Judge stated:

I have come to the conclusion that the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission.

The Judge considered that although he felt able to decide the point, it was not acte claire. He decided not to refer the point to the CJEU as the issue was not determinative of whether the court had jurisdiction at all.

This was because he interpreted the Particulars of Claim as alleging acts of reproduction and extraction by Sportradar's end users in the UK who downloaded the data from the first Defendants servers. Although the customers/end users were not party to the proceedings he also found that the pleadings alleged Sportradar were authorising and/or jointly liable for, the acts of the end users/consumers.

As a consequence the English Court had jurisdiction just in respect of the issue of whether Sportradar had authorised, or were jointly liable for, the acts of reproduction, extraction and re-utilisation of a substantial part of the Football Live database.

The Judge then considered the amendment application. On the basis of relevant principles he could not allow any amendment which raised a new cause of action if it was within the scope of the German proceedings.

He therefore allowed in the amendments which gave further particulars of joint tortfeasorship by Sportradar and which pleaded communication to the public by its customers but did not allow in an amendment alleging making available by Sportradar themselves under s.20 Copyright Designs and Patents Act 1988.